Intellectual Property Forums (http://www.intelproplaw.com/Forum/Forum.cgi)

(Message started by: pentazole on Dec 6th, 2007, 6:03pm)

Title: Since we're on the topic of ODP
Post by pentazole on Dec 6th, 2007, 6:03pm
I also have a question regarding non statutory obviousness type double patenting rejections.

Ok here's the situation.  Application A is pending.  Patent X is issued.  Application A and patent X don't share inventors, but have a common assignee.

Patent X is a national stage of a PCT based on foreign patent Y.

Now here's one of the (in my opinion) worst rejections ever by an examiner.  There are 7 years between the publication of patent X and Application A.

First, I got a nonstatutory double patenting rejection over patent X, and a recommendation that a terminal disclaimer will get rid of the reference.

Then, I got a 102(b)/103(a) rejection over the forein patent Y, based on the translated text of patent (X).

So basically, this examiner just recommended that I file a terminal disclaimer, shave 7 years off the patent, and basically not advance in prosecution since the TD will not get rid of the 102(b)/103(a) rejection because it's based on a statutory bar.

Am I wrong in my analysis?  I'm not very familiar with obviousness type double patenting rejections when not based on two copending applications based on the same invention.

Opinions welcome before I say something stupid in my response.

cheerio

Title: Re: Since we're on the topic of ODP
Post by Isaac on Dec 6th, 2007, 8:35pm

on 12/06/07 at 18:03:30, pentazole wrote:
Opinions welcome before I say something stupid in my response.

cheerio


I think your analysis is right, but I think you are over reacting a bit.   Most likely the discussion of the terminal disclaimer was just boiler plate that gets used every time the examiner  makes a non-statuory double patenting rejection.   It really isn't advice.

Title: Re: Since we're on the topic of ODP
Post by pentazole on Dec 7th, 2007, 8:44am
No I don't think I'm overreacting.  While you and I understand that it's boilerplate, Independent Inventor who hasn't done this before (except maybe once since it's double patenting haha) may not know that, and may file the TD.  The reason why this should fall under statutory double patenting, if at all, is to avoid a situation where you would file a TD but get nowhere.  I am inclined to write that in my response, but most likely the attorney I work with would not want to.

Title: Re: Since we're on the topic of ODP
Post by Isaac on Dec 7th, 2007, 1:09pm

on 12/07/07 at 08:44:01, pentazole wrote:
No I don't think I'm overreacting. While you and I understand that it's boilerplate, Independent Inventor who hasn't done this before (except maybe once since it's double patenting haha) may not know that, and may file the TD. The reason why this should fall under statutory double patenting, if at all, is to avoid a situation where you would file a TD but get nowhere. I am inclined to write that in my response, but most likely the attorney I work with would not want to.


I'll admit to feeling some empathy with the examiner on this issue. :)

The rejection isn't statutory double patenting because the claims in question do not recite identical subject matter to the claims in patent X.  The examiner cannot call the rejection statutory just to prevent you from filing a terminal disclaimer.

Assuming that both rejections were in the same office action, I don't see how anyone would reasonably attempt to file the terminal disclaimer without also filing a response overcoming the 103 rejection.   If doing so amends the claims enough to also address the double patenting rejection, I would hope that the terminal disclaimer would not be filed even if the office action mentioned the terminal disclaimer, but I don't think the examiner ought to be tasked with sorting all of that out.


Title: Re: Since we're on the topic of ODP
Post by pentazole on Dec 12th, 2007, 11:49am
I withdraw my original post.



Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright 2000-2004 Yet another Bulletin Board